European Union: Lessons From Aunty

A recent European trade mark decision highlights how risky it
can be to simply register the word version of a trade mark that is
used in a stylised form. The case also highlights an issue that may
be worthwhile considering when creating a trade mark –
simpler may be cheaper.

The decision in question involved a European registration for
the trade mark Aunt Bessie's in ordinary script for a range of
foodstuffs. The trade mark Aunt Bessie's is seemingly well
known in the United Kingdom for goods like roast potatoes. The
company that owns the registration opposed an application to
register the trade mark Aunt Berta's in a stylised form for the
same goods.

Although the opposition succeeded in the first tribunal, the
decision was reversed by the Board of Appeal. The Board of Appeal
held that, although the goods were identical, there were sufficient
differences between the trade marks to make confusion unlikely. In
reasoning that raises a few questions, the Board of Appeal said
that English speakers would easily distinguish the trade marks
because they understand the word "aunt" and therefore
know that two different aunts are involved here, whereas
non-English speakers, for whom the word "aunt" is
meaningless, will also distinguish the trade marks because of the
differences between Bessie's and Berta's.

Interestingly, the Board of Appeal acknowledged that the visual
appearance of a trade mark is particularly important in the food
sector because of the way in which foodstuffs are bought, namely in
busy supermarkets where there may be a lot of competing products,
and where consumers don't always have much time for
reflection.

What makes the case unusual, however, is that the trade mark
Aunt Bessie's is in fact used in a highly stylised form, one
that makes it quite similar in appearance to the stylised Aunt
Berta's trade mark that it opposed. In both cases, the name is
in a stylised red script. However, this fact didn't come into
the equation because the company didn't have a registration for
the stylised form of its trade mark, and hadn't relied on any
"common law" or user rights to its stylised trade mark,
something that would have required proof of use, reputation and
likely confusion.

This decision highlights a dilemma that trade mark owners face.
It's absolutely essential to register a word trade mark in
ordinary script to get the widest possible protection for the word.
A registration for a word trade mark should cover all usages of the
word, and all similar words. So, for example, if the trade mark
that had been opposed in this case had featured the same script but
with the name Aunt Bessie's, or possibly even Aunt Bess's
or Aunt Bennie's, the opposition probably would have succeeded,
given the similarities of the names. But, because it comprised a
name that was a bit different (Aunt Berta's), the opposition
failed.

The company that owns Aunt Bessie's would have been in a far
stronger position if it had also registered the trade mark Aunt
Bessie's in the stylised form in which it is used. The tribunal
would then have compared the two stylised trade marks and may well
have concluded that confusion was likely. Trade mark owners should
sometimes treat a stylised word trade mark in much the same way
that they treat a logo; in other words, as something that should be
registered separately from the word trade mark, even though the two
are used together.

A registration for the stylised version of a word mark puts the
emphasis on the visual aspect of the trade mark rather than the
word itself. This can be important because it can be easy to
recreate the visual appearance of a stylised word trade mark
without copying the word itself. Think, for example, of the famous
cocaine version of the Coca-Cola stylised trade mark, where
Coca-Cola Company filed a trade mark infringement claim against
Gemini Rising Inc. based on its reproduction of a poster for
commercial sale, which stated "Enjoy Cocaine" in the same
script, colour and format as the well-known Coca-Cola trade mark.
The Coca-Cola Company was successful in its trade mark infringement
claim and the court recognised the distinctive quality of the
Coca-Cola trade mark, as well as the business reputation of the
company. The reality is that the more stylised a trade mark, the
greater the need for a separate registration. This is something
that should perhaps be borne in mind at the brand-creation
stage.

The objection to filing separate trade mark applications for the
word and the stylised form of the word is, of course, that it
doubles the cost. But it's probably worth the expense. If the
Aunt Bessie's case had been fought in South Africa, the owners
of Aunt Bessie's may well have relied on common law and
registration rights. This would have been a costly exercise,
involving the submission of evidence of sales figures, advertising
expenditure figures and, preferably, instances of confusion. The
cost of this exercise would have far exceeded the cost of a second
trade mark application.

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